Marketel International, Inc. v. Priceline. Com

AMENDMENT TO DECISION GRANTING PARTIAL SUMMARY JUDGMENT

On December 5, 2000 the court granted partial summary judgment in favor of defendants. The court’s decisions were not set out in a written order, but were stated in open court on the record of the reporter’s transcript.

As a part of those decisions, the court ruled in favor of defendants on the inven-torship claim (Count 5) on the ground that 35 U.S.C. section 256 does not authorize correction of inventorship when the named inventor acted with “deceptive intent” in securing inventor status. The court cited General Electric Co. v. Brandon, 25 U.S.P.Q.2d 1885 , 1887 (N.D.N.Y.1992), University of Colorado Foundation v. American Cyanamid, 880 F.Supp. 1387, 1397-98 (D.Colo.1995) and McMurray v. Harwood, 870 F.Supp. 917, 919-20 (E.D.Wis.1994) for the proposition that there must be a lack of deceptive intention on the part of the person originally named as the inventor in order for a section 256 correction to be ordered. See also RobeRT P. MeRges, Patent Law and Policy 821-24 (2d ed.1997); Bemis v. Chevron Research Co., 599 F.2d 910, 912 (9th Cir.), cert. denied, 444 U.S. 966 , 100 S.Ct. 454 , 62 L.Ed.2d 378 (1979) (analyzing…